Archive for 2013|Yearly archive page

Charles Dickens is with us at this time of year, his own ghostly visitation appearing via A Christmas Carol. But his spirit may have been addedly engaged last week when the news broke that scholars at Heinrich Heine University in Dusseldorf had ranked the Vancouver Public Library (together with Montreal’s Bibliotheque) as the world’s best public library.

This evaluation of libraries came through focus upon “informational cities,” defined as “prototypical spaces of the knowledge society … where flows of information, capital, and power are as or more important than physical spaces (p.1).” Even more critical than the ranking, although as a Vancouverite I would not wish to renounce it entirely, the analysis makes plain that libraries form “an essential part of the city’s … knowledge and creative infrastructure… (p.313).” It is this sentiment that furthered the establishment of public libraries in England in the 19th century.

In 1850, the English House of Commons undertook an inquiry into the nature of their libraries with the conclusion that, in comparison to Europe, Britain was inferior in terms of libraries freely available to the public. As reported by the Spectator, 12 November 1853, this situation was “unworthy of the power, the liberality, and the literature of this country.”

From the inquiry came an act to enable Town Councils to establish public libraries and museums. The first such public library was the Manchester Free Library; it opened on 2 September 1852 with Charles Dickens among the speakers. As revealed by the Manchester Archives during the bicentennial celebrations of his birth, Dickens had accepted the invitation with alacrity. “… My engagements are very numerous but the occasion is too important and the example too noble to admit of hesitation.” Assigned the task of introducing the resolution, Dickens gave added thrust to the importance of public libraries:

“That as in this institution special provision has been made for the working classes, by means of a free lending library, this meeting cherishes the earnest hope that the books thus made available will provide a source of pleasure and improvement in the cottages, the garrets, and the cellars of the poorest of our people.” … Ladies and gentleman, I have long been, in my sphere, a zealous advocate for the diffusion of knowledge among all class and conditions of men; because I do believe, with all the strength and might with which I am capable of believing anything, that the more a man knows, the more humbly, and with a more faithful spirit he comes back to the fountain of all knowledge, and takes to his heart the great sacred precept, “On earth peace, good will towards men.” Ladies and gentleman, I have great pleasure in moving the resolution which I have already read to you.*

The significance of the role played by public libraries was not lost on the colonies. Reporting on the opening ceremonies in Manchester, the Empire (Sydney) emphatically called upon its elite to step forward and give the City of Gold such an institution. Describing Manchester’s initiative:

They assembled to establish no Charity School, with a scrannel supply of innutritive knowledge for the workers, but a great and enduring institution filled with the light of genius from every age and every land, where the gifted sons of poverty may burst from their bonds … for the advancement of civilisation and the highest interests of the human race.

In Canada, Dr. Alphaeus Todd, Librarian of Parliament, in a plea to improve supply of reading material to residents, also pointed to English developments. Courtesy of Libraries Today, his report to the Royal Society of Canada (1882) is available here. Quoting from the first librarian of the Manchester Free Library, Todd wrote:

… Without exception, the working of all the free libraries so established and brought into active operation has proved eminently satisfactory to all classes of ratepayers. It has largely promoted that industrial education which fits men for their specific callings in life, as well as that wider education that reaches farther and higher…. (p.16).

Closer to home, the British Columbia provincial legislature passed a Free Libraries Act in 1891. In Dave Obee’s The Library Book—A History of Service to British Columbia, former Lieutenant Governor Iona Campagnola writes that the history of library services in British Columbia:

… is a testament to individual determination intended to overcome all challenges associated with B.C.’s difficult geography, complicated history, sparse population and ever-shifting economy…. Through their own love of books, men and women worked hard to enrich the unique culture of this precious province of ours. They knew the value of the gift of learning, education and knowledge that was to be found in libraries, and they knew the simple joy of being able to borrow literary works of history, fiction, poetry, drama and criticism, to experience a “really good read!”

After the Manchester event, Dickens would write to a friend: “I wish you could have seen the opening of the Free Library… Such a noble effort, so wisely and modestly made; so wonderfully calculated to keep one part of that awful machine, a great working town, in harmony with the other.”

History must always remain incomplete, but last week’s news gives hope that libraries may yet endure as “wise and modest” institutions facilitating harmony as much as knowledge.

Yesterday, the universities of Toronto and Western Ontario formally announced their ending of relations with Access Copyright; Michael Geist cannily summed up the proceedings as “confirming the obvious.” Access Copyright’s licensing model is unsuited to the evolving needs of academic institutions. But it would be wrong to conclude that academic institutions want to evade payment for copyrighted works; quite the contrary. It only means institutions are unwilling to pay twice over for works licensed through other means, and are less than willing to pay for reproductions that are available without cost for a variety of reasons including: open access, public availability, and fair dealing. Across Canada, academic institutions are making the best use of resources to the betterment of students, teachers, researchers etc. We should expect nothing less given the predominance of taxpayer funds that support institutions, not to mention the over and above costs passed on to students and their families.

Reviewing the press releases of the three parties involved, while the institutions (Toronto and Western) each courteously state that negotiations were conducted in “good faith by both parties”, Access Copyright is unwilling to be so gracious. Instead, it continues to argue the seeming newness of fair dealing as interpreted by the universities; that it is “untested by law and closely replicates the scope of coverage in the Access Copyright license.”

I beg forgiveness for repeating, yet again, that current practices of fair dealing were shaped expressly by the edicts of the highest court of the land, over a period of ten years. The landmark decisions that speak directly to reproduction of works in educational institutions (CCH Canadian v. Law Society (2004), Access v. Education (2012), SOCAN v. Bell (2012), ESA v. SOCAN (2012)) predate the inclusion of “education” to fair dealing as amended through the Copyright Modernization Act (2012). See Notable Supreme Court Decisions for a summary of the decade.

The flexibility we enjoy today is not the result of an act of benevolence on the part of governments or courts—it is an acknowledgement that copyright holders were previously allowed to deny Canadians the full benefit of copyright’s system of limited rights and is a corrective to that unfortunate history. Access Copyright, perhaps unwittingly, confirms this with their view that fair dealing today replicates coverage within their previous licenses.

The blanket model licenses used in the past insinuated that fair dealing only existed in the presence of a general license. Educational institutions agreed to Access Copyright’s general prescription of fair dealing as a series of quantified measures, thereby removing any hint that fair dealing is a matter of individual context. Our educational institutions are now reclaiming the individuality of fair dealing on behalf of their communities. To which I must say: it is about time.

Almost two years ago to the day, Ariel Katz posted a compelling essay titled Fair Dealing’s 100 Years of Solitude. He chronicled in detail the treatment of the exception after its 1911 codification into statutory law in the United Kingdom. “Tragically, what was supposed to be an exercise in the codification of a dynamic and evolving common-law principle ended up—with a few notable exceptions—in a hundred years of solitude and stagnation.”

Posted shortly after the Supreme Court of Canada heard the “pentalogy” cases, Katz wrote: “The cases that the Court heard last week will determine whether CCH will be seen as an outlier in copyright jurisprudence or whether it created a necessary correction that brings fair dealing back to play the role it was always supposed to play.” As 2012 would bear out, the Court rose to the occasion and continued the task of bringing fair dealing back to its time-honoured role as a flexible limit upon the rights conferred through copyright.

Returning to the current news, to better understand the 20th century Access Copyright model of blanket licensing of educational materials, it is important to understand the history of Access Copyright itself. Two years ago I gave a brief talk on this matter for the British Columbia Library Association; my notes and references can be found through this post.

Access Copyright will not go quietly into the night. They continue a campaign of fear, targeting the teachers who are learning to navigate the terrain of copyright and fair dealing: “For faculty who are accustomed to operating under Access Copyright licenses, the termination will be accompanied by disruption and uncertainty. Faculty may be asked to change the way they share materials or assume greater personal responsibility for copyright … .”

While institutions have become much better at providing copyright information, all too often the rationale for a “10%” rule is missing or limited to a citation of CCH Canadian. In yesterday’s announcements, both institutions spoke of educating their communities about copyright; the stories that make up fair dealing’s history, past and present, ought to be the starting point. Regulations and best practices take root more quickly if they are placed in context.

“Countries that want to preserve flexibility on copyright term pretty much have no strategy in the TPP. Canada is about to fold.”

This tweet came early Friday morning from James Love, Director of Knowledge Ecology International. Love is in Singapore watching the latest drama of the TransPacific Partnership (TPP) negotiations. However, given that Canada officially has no negotiating power, its efforts to opposing copyright maximalism may not matter anyway. (Thomas Walkom, of The Toronto Starreported in 2012 that Canada’s admittance to the group did not include the right of negotiation.)

As many readers know, the TPP is a trade agreement in the making, negotiated in secrecy (except for privileged members of the business class). In November, Wikileaks published details of the negotiations with respect to intellectual property rights; they did not look promising. At that time, Michael Geist offered a series of posts detailing the shortcomings of the agreement. In his first post, Geist wrote:

The good news is that Canada is pushing back against many U.S. demands by promoting provisions that are consistent with current Canadian law. Canada is often joined by New Zealand, Malaysia, Mexico, Chile, Vietnam, Peru, and Brunei Darussalam. Japan and Singapore are part of this same group on many issues. Interestingly, Canada has also promoted Canadian-specific solutions on many issues. The bad news is that the U.S. – often joined by Australia – is demanding that Canada rollback its recent copyright reform legislation with a long list of draconian proposals. …

The U.S. finds itself relatively isolated on many issues, with only Australia offering consistent support for its positions. For example, Canada and most other TPP countries support a general objectives provision that references the need for balance, promotion of the public domain, protection of public health, and measures to ensure that intellectual property rights themselves do not become barriers to trade. The U.S. and Japan oppose these objectives.

If the U.S. is successful in pressuring other countries to meet its demands, Canada would be required to radically overhaul its current law, reversing course on many of the rules the government recently enacted as part of its long-awaited copyright reform package or negotiated in the trade agreement with the European Union.

Returning to Love’s assessment of the current talks, the prospects of Canada (or any country) maintaining a sovereign system of copyright looks bleak. Copyright term extension is high on the list of demands; earlier today Love tweeted: “One USTR official I talked to said, yes, 70+ life copyright terms [are] wrong. But Europe made us do it, and now, we need everyone to follow.” Even more disturbing was the news that Mexico is arguing for “at least” life plus 100.

Yet copyright may be the least of our problems.

By far the most insidious part of the TPP is the determination by the Office of the United States Trade Representative (USTR) to further entrench the Investor State Dispute Settlement (ISDS) process. This mode of dispute resolution allows corporations to sue governments, not through courts of law, but in private tribunals. Earlier this year, law professor Brook Baker published a comprehensive examination of the risks ISDS poses to access to medicines:

Suddenly intellectual property rights, already hugely protected, are given another mantle of protection, namely protections as investments. In addition, investors are given rights to bring claims for private arbitration directly against governments whenever their expectations of IP-based profits are frustrated by government decisions and policies. Decisions of these private arbitral tribunals consisting of three international trade lawyers are not subject to judicial review, but are reducible into court judgments that can be levied against government property.

The principle behind compensation for thwarted expectation may have seemed rational at its outset (investor-state dispute mechanisms were first introduced in NAFTA in 1994) — to ensure corporations have recourse against unstable governments whose court systems may lack objectivity and rigour. But the mechanism has allowed egregious actions by corporations directly against governments, sidestepping robust courts of law. That health, environmental, or financial regulations seem to hinder corporate profit, is considered sufficient cause to bring action. That these regulations serve the citizens of that elected government is irrelevant.

In a TPP information session in Singapore, Melinda St. Louis of Public Citizen gave a presentation describing actions brought under ISDS; video available here. Some of the highlights:

Even municipal actions can provoke claims of frustrated expectation.

The private attorneys who participate in the proceedings rotate between serving as arbitrators and serving as judges.

Tribunal rulings are not bound by precedent.

There is no means for appeal.

Governments cannot counter-sue investors.

The proceedings are very expensive for governments; it is in the interests of the tribunal arbitrators to drag out proceedings as even if the government wins, “almost always they are ordered to pay half the tribunal costs.”

Tribunals have the discretion to award unlimited damages.

Each year, the number of disputes increases.

An example from St. Louis’ list (there were many): Occidental Petroleum (OP) breached their contract with the Ecuadorian government; the tribunal recognized the breach of contract but still awarded OP $2.4 billion to be paid by the government.

Canada features in the list a few times; including the matter of Eli Lilly. As I have written before, the U.S.-based pharmaceutical company has taken issue with Canadian courts’ invalidation of patents for two drugs and is seeking $500 million. St. Louis emphasizes how significant this case is: “[Eli Lilly is] actually challenging Canada’s entire patenting system.”

As a result of numerous actions against governments, many countries are starting to question whether ISDS should be part of trade agreements. Intriguingly, all 50 state legislatures in the United States passed a resolution opposing ISDS in trade agreements. Which makes it all the more perplexing that Canada appears to have already agreed to such terms in the purported Canada-EU free trade agreement. Announced in October by the Harper government as an agreement in principle, the text has not yet been publicly disclosed. But in the summary document provided by our government, discussion of ISDS is artfully worded:

The process that investors follow to seek compensation is called “investor-to-state dispute settlement” (ISDS) and involves an independent arbitral panel hearing facts and making a decision on the merits of an investor’s claim. ISDS rules have been a standard feature of Canada’s comprehensive free trade agreements since the North American Free Trade Agreement and give assurance to investors that their investments will be protected from discriminatory or arbitrary government actions (p.21). …

When individuals have disagreements, they have various ways to resolve them. They can try to negotiate among themselves or, if that doesn’t work, they can seek the help of an impartial third party such as a mediator, an arbitrator or a court. Trade disputes between countries work much the same way. Trade agreements include various dispute resolution mechanisms so that governments can resolve their disagreements. For instance, when consultations fail to resolve a problem, trade agreements provide governments with the option of using impartial third parties to help resolve the dispute. In some cases, these third parties act like courts in the sense that they hear evidence from both sides and ultimately render binding decisions (p.38).

While our government assures us that the agreement, “includes provisions to guard against frivolous claims in order to ensure that the process will not be abused,” the disparate bargaining positions vis-à-vis the Europeans do not bode well for Canadians; see this assessment of the imbalanced negotiation by Gus Van Harten (an Associate Professor at Osgoode Law and well-versed in international trade).

Our best hope seems to be that saner Canadian heads will prevail before the final language is set. And that other countries can remove the deleterious conditions of ISDS from the TPP.

No doubt, readers have already taken in the good news: on 14 November 2013, the Google Books Project was deemed fair use by Judge Denny Chin of the Southern District of New York. Hailed as a stunning victory for libraries and their patrons, the visually disabled, and continued high-tech innovation, the details almost seem mundane – of course displaying snippets of a work is not a violation of copyright. That the law should uphold common sense seems only appropriate.

Yet this was a story that began with an uncertain ending. At its outset in 2004, the actions of Google struck many as audacious. The Google Books project necessarily involved scanning entire books. While there was always an argument for legitimate fair use – library books were scanned with permission from libraries, the majority of books were out of print, only snippets would be displayed, Google did not engage in any direct profiteering from its action, etc. – the dialogue of copyright did not yet embrace nuanced examinations of copying with open consideration of public benefit. To some, once a copy is made without permission, the copyright owner’s rights have been infringed and heads should roll.

If the Author’s Guild had successfully shutdown Google Books at the start, the public benefits of the project would never have seen the light of day. And it was those benefits that Judge Chin emphasized in his decision, even before providing the analysis of fair use. Paraphrasing some of the key elements from his list (starting on page 9):

“Google Books provides a new and efficient way for readers and researchers to find books. … It provides a searchable index linking each word in any book to all books in which that word appears.” Chin emphasizes that Google Books has become an essential research tool and part of our information society landscape.

“Google Books greatly promotes a type of research referred to as ‘data mining’ or ‘text mining.’” Chin pays particular attention to the brief prepared by Matthew L. Jockers, Matthew Sag and Jason Schultz on behalf of Digital Humanities and Law Scholars, and extolls the merits of the newer form of scholarship.

“Google Books expands access to books.” Chin draws attention to the “traditionally underserved populations,” and points out that not only are the books themselves more easily found but that “digitization facilitates the conversion of books to audio and tactile formats, increasing access for individuals with disabilities.” He also champions the “remote and underfunded libraries that need to make efficient decisions as to which resources to procure for their own collections or through interlibrary loans.”

“Google Books helps to preserve books and give them new life.” Chin is clearly aware that older, and potentially out-of-print, books are falling apart. Scans will at least preserve the content.

And, quite apart from merit of the project with respect to reading, research, under-served populations and preservation, “Google Books benefits authors and publishers.” With any selection of a snippet, users are easily connected to sellers of the books thereby increasing the potential for sales.

Of course, Chin does not omit the examination of fair use; he performs the analysis with ease and clarity. Before, and after, he reminds us that the listed four factors need not be the only consideration in questions of fair use. He emphasizes that they are only a general guidance and that there might be other considerations. Although, for the purposes of this case, he only needed the traditional four factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

While fair use analysis allows for consideration of any purpose and character, American case law has long emphasized that transformative uses are fair. Chin has no difficulty assessing Google’s Book Project as transformative. “Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books (p.19).” Pointing to past successful arguments of fair use in the use of thumbnail images, Chin writes: “The display of snippets of text for search is similar to the display of thumbnail images … [to] help users locate books and determine whether they may be of interest (p.20).” And, with recourse to a fair use standard-bearer, the work of Judge Pierre Laval, Chin concludes the first factor by saying, “[Google Books] adds value to the original … [through] the creation of new information, new aesthetics, new insights and understandings (p.21).”

[Chin refuses to let the mere word “commercial” misdirect the claim of fair use. He points out that Google does not engage in direct commercial behaviour in connection to the snippets of text or the scans. “Even assuming Google’s principal motivation is profit, the fact is that Google Books serves several important educational purposes (p.22).”]

(2) the nature of the copyrighted work

With the majority of the scanned holdings being published books, the availability of the snippets for the public is only an asset to the claim of the fair use. Drawing from past case law, Chin writes: “Whether or not a work is published is critical to its nature under factor two because the scope of fair use is narrower with respect to unpublished works (p.23).”

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole

Chin begins with the reminder that the copying of entire works can be considered fair use. He then easily explains why Google’s entire copies are necessary and, happily enough, would never be available to serve as a substitute for the original: “… as one of the keys to Google Books is its offering of full-text search of books, full-work reproduction is critical to the functioning of Google Books. Significantly, Google limits the amount of text it displays in response to a search (p.23).”

(4) the effect of the use upon the potential market for or value of the copyrighted work

To the complaints voiced by the Author’s Guild that Google Books would negatively impact the market and that the snippets could be collected into a substitutable book, Chin details the lack of logic within their arguments:

Neither suggestion makes sense. Google does not sell its scans, and the scans do not replace the books. While partner libraries have the ability to download a scan of a book from their collections, they owned the books already — they provided the original book to Google to scan. Nor is it likely that someone would take the time and energy to input countless searches to try and get enough snippets to comprise an entire book. Not only is that not possible as certain pages and snippets are blacklisted, the individual would have to have a copy of the book in his possession already to be able to piece the different snippets together in coherent fashion.

And, the final rebuttal to the oddity of arguing that exposure would decrease sales:

An important factor in the success of an individual title is whether it is discovered — whether potential readers learn of its existence. Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays. Indeed, both librarians and their patrons use Google Books to identify books to purchase. Many authors have noted that online browsing in general and Google Books in particular helps readers find their work, thus increasing their audiences. Further, Google provides convenient links to booksellers to make it easy for a reader to order a book. In this day and age of on-line shopping, there can be no doubt but that Google Books improves books sales.

In his concluding remarks, Chin again returns to the merits of Google Books with respect to public benefit. The decision as a whole is only 30 pages and well worth reading.

With the Author’s Guild already positioning itself for appeal, this story is not yet over. But with such a decisive endorsement of fair use, and keeping in mind that this examination was expressly ordered by the Second Circuit Court of Appeals, the likelihood of this decision being overturned is slim.

Update October 2015

As was to be expected, Google Books met with success at the Second Circuit. See here for my commentary.

And yet, the saga is not over. The ink was barely dry before the Authors Guild stated its intentions to appeal, claiming that this acceptance of fair use is a “faulty interpretation.” There is an air of desperation about the Authors Guild stance; rather than focusing upon the law, it emphasizes “Most full-time authors live on the perilous edge of being able to sustain themselves through writing as a profession …”

Canadians are accustomed to hearing such emotion as a substitute for argument; in August, Access Copyright heightened its pitch with a distorted assessment of fair dealing and the purported impact upon authors in Canada. As I have written since, and is apropos on both sides of the border, if authors continue to struggle after 300 years of expansion of copyright, “perhaps copyright is neither the problem, nor the solution.”

A curious story came to light last week, that of a film studio exerting influence over the design of a curriculum. Warner Brothers took issue with an English course, prepared by the University of New Hampshire and offered this past summer to children, titled “Harry Potter as Storytelling: An Online Adventure for the Young Fan.” Most coverage of the story emphasizes that Warner Brothers was concerned that people would think the studio had sponsored the course. However, the cease and desist letter, courtesy of Michael Brindley writing for New Hampshire News, shows a decidedly more strident tone than that of concern:

Warner Bros. is the exclusive owner of all trademark rights, and certain other intellectual property rights in and to all elements contained in the best selling series of “Harry Potter” books and popular motion pictures, including, but not limited to, “Harry Potter and the Sorcerer’s Stone,” “Harry Potter and the Half-Blood Prince,” and “Harry Potter and the Deathly Hallows” (hereinafter, collectively, the “HARRY POTTER Properties”). Because of these rights, no one may utilize the HARRY POTTER Properties without the express written permission of Warner Bros.

(Of course, the last sentence is patently false; fair use and fair dealing expressly permit some unauthorized uses of any copyrighted work, including the HARRY POTTER Properties.)

What is striking about the letter is its lack of precise detail. While rushing to claim its trademark rights and “certain other intellectual property rights”, Warner Brothers only goes so far as to state that words and concepts were used in the course. The studio does not explain how this is a violation of any intellectual property right:

[The] course is entirely themed around the HARRY POTTER Properties and makes extensive use of them for commercial and marketing purposes. For example, each of your five classes mimics the fictional classes taught at Hogwarts School of Wizardry as expressed in the HARRY POTTER books and motion pictures. In addition, there are “magical areas” (e.g. Azkaban, Honeydukes, etc.) which are derived from protected elements of the HARRY POTTER Properties. Other elements of Hogwarts are used, such as “prefects,” and school houses, etc., all of which are obviously designed to mimic an experience in the fictional world of Hogwarts. Moreover, the website uses trademarks owned by Warner Bros. to promote the course. These include the name “Hogwarts,” “Harry Potter,” and depictions of the lightning bolt and glasses – all derived from and associated with the HARRY POTTER Properties.

Intellectual property rights are contingent upon the nature of the use made of the claimed property. It is not enough for any intellectual property claimant to merely state that something was used. How it was used and why it was used are germane to the claim of right. And it is not at all clear what portion of law would actually support most of Warner Brothers’ objections.

To suggest that anyone can, or should, control the use of the word “prefect”, or the use of the idea of school houses, is audacious. There is no basis in law to claim rights to a common word or concept. Besides, the terminology and concept have been in popular use since English boarding schools were created; even today, among the private schools that cater to children of the Empire, we still hear of prefects and school houses.

Continuing to review the listed complaints, the objection to mimicry is bizarre. Invoking fictional settings with role playing is a time-honoured pleasure for children, and a highly-regarded method of teaching. Getting into the skin of a character is a means to the better understanding of character development. For such mimicry to be effective, explicit references to characters and events are not only appropriate, they are necessary. For such mimicry to be a violation of law, the law would have to require that explicit reproduction of specific words is the sole basis upon which rights are awarded. That is hardly true. As I have written many times, copyright law permits unauthorized reproduction of protected works, depending on the context. So too, does trademark law.

Warner Brothers makes the claim that their trademarks were violated in the marketing of the course. They objected to the use of: “Hogwarts,” “Harry Potter,” and, “depictions of the lightning bolt and glasses”. Without seeing all the original marketing materials, it is not possible to accurately state whether a trademark violation occurred or not. Nevertheless, the law and contemporary discussion* offer some clues.

According to the Legal Information Institute at Cornell University, a trademark is:

any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.

However, control over a trademark is not absolute. Trademark law has its own limits. This situation calls for consideration of the legal doctrine of nominative fair use which allows for use of a trademark when the purpose is to refer to that product. A course about Harry Potter will naturally require the use of the words “Harry” and “Potter” in both its title and course description. And if the course is intended to simulate the schooling experience, using “Hogwarts” would seem not unreasonable.

As to whether the lightning bolt and glasses were necessary, more information is needed. But, interestingly enough, the library at the University of Texas has a timeline of trademark history, accompanied by illustrations, and indicates that lightning bolts were used in the 1930s as signs of modernity and power. Which leads one to wonder if Warner Brothers and J.K. Rowling sought permission for using said lightning bolt in their creations.

Like fair use in copyright law, limits upon trademark control are a grey area; each situation must be evaluated on its own merits. This flexibility is important to maintain the flexibility that is inherent to all creative endeavor. It is worth noting that while the principal of trademark rights is to avoid confusion to consumers, courts have tolerated modest confusion depending on the circumstances. In this case, if the title of the summer-school course invites momentary confusion that Warner Brothers is actually getting into the education business, a simple disclaimer in the course outline would alleviate that confusion.

Returning to the University of New Hampshire, their response to Warner Brothers appears to be one of capitulation; without admitting wrong-doing, they have set out to:

… remove all uses and references that could be interpreted as improper from content and title. The course will still include the Harry Potter novels as part of the curriculum literature for the course’s educational purposes, but will no longer reference, mimic, or emulate the Harry Potter properties. (Emphasis mine.)

This is disappointing, as Warner Brothers’ objections appear more mischievous than legitimate.

* Some interesting reading

Trademark Law and Theory: A Handbook of Contemporary Research, edited by Graeme B. Dinwoodie, Mark D. Janis (Edward Elgar, 2008). Nominative fair use is discussed in detail; i.e., “… occurs when the defendant designates its product source using a third-party trademark for its referential meaning (p.426).”

Further discussion of trademark law is available from William McGeveran, “The Trademark Fair Use Reform Act,” Boston University Law Review (2010). McGeveran draws attention to the challenges for free speech wrought by aggressive, and sometimes groundless, claims of trademark ownership. His initial words are disturbing:

[Some] lawyers charged with policing their clients’ trademark portfolios now send threatening “cease and desist” letters (C&Ds) as a routine response to virtually any unauthorized use of a mark. In addition to deterring the individual recipients, these legal threats also serve a broader signaling function by warning against all unauthorized uses of a mark (p.2273).

McGeveran remarks that it is “the risk of litigation, not the risk of liability,” that compels would-be defendants to adopt risk-averse policies (p.2276). Together with his own proposal to ameliorate this chilling effect, he presents a comprehensive literature review of other proposals for change (see footnotes 5-10, p.2270)).

Writing for The Washington Post, Timothy Lee reminds us that 27 October 2013 marks the 15th anniversary of presidential signature to the Copyright Term Extension Act (CTEA, 1998) of the United States. That act added twenty years to the American term of copyright for all future, and existing, copyrighted works.

Placed against the United States’ constitutional mandate for copyright — “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” — the absence of logic was striking. No length of added time can promote further progress in science or arts from already deceased creators. But prominent copyright holders, notably the Disney Corporation, stood to gain by longer terms for existing works and Congress obliged. Conveniently, entertainment lobbyists could point to developments in the European Union as reason for the American changes; the Europeans had recently implemented a copyright term of life-plus-seventy years.

The clamour to follow international standards for copyright is a relatively recent move on the part of the United States. In its days of nation building the United States took a lax view of international copyright protection; helping itself to authentic English literature effectively fostered both the book industry as well as education of its people.

A new addition to the canon of history of American intellectual property policy is Without Copyright—Piracy, Publishing and the Public Domain, by Robert Spoo; see here for an account by Greg Barnhisel for the Los Angeles Review of Books. Spoo is no apologist for piracy; instead, he brings attention to the way that the word piracy has been constructed, its “typical and uncritical use [is] detached from the legal conditions that permitted and even encouraged it, [giving] a false aura of illegality to a practice…” Spoo focuses on the development of the American publishing sector and its practices of trade courtesies, but his words bring to mind the invective from some contemporary copyright holders concerning lawful exceptions like fair use and fair dealing. Delightful reading as Spoo’s work is, it is disturbing as well; he charts the decline of the American public domain, and a world-wide decline along with it.

Returning to today’s anniversary; as American entertainment products became highly sought after in international markets, the United States saw merit in international cooperation towards intellectual property protection. After a hundred-year delay in joining the Berne Convention (created in 1886, the United States became party to the convention in 1989) the United States sought to instill broader protection of copyright through the Agreement on Trade Related Aspects of Intellectual Property (1994) and later pushed an even more aggressive agenda with respect to the World Intellectual Property Organization (WIPO) Internet Treaties (the text was declared by WIPO in 1996, American ratification occurred in 1999).

The domestic arguments for stronger copyright touted the preservation of American dominance in world markets. In the late twentieth century and early into the new millennium, copyright proponents could rely on little opposition to their claims. This is no longer the case. Earlier this year Jonathan Band and Jonathan Gerafi unambiguously contradicted the claim. In a paper titled Foreign Ownership of Firms in IP-Intensive Industries, posted to InfoJustice.org on 5 March 2013, they give detailed analyses of ownership in the sectors of book publishing, music, motion pictures, pharmaceuticals and more. A few key findings are:

– Four of the “Big Six” publishers, the largest English language trade publishers, are foreign-owned. More than 80 percent of the global revenue of the Big Six is generated by these foreign-owned companies. These foreign-owned companies publish more than two thirds of the trade books in the U.S.
– Four of the five largest STM (science, technical and medical)/Professional publishers are foreign-owned. More than 90 percent of the revenue of the five largest STM/Professional publishers was generated by foreign-owned firms.
– Only seven of the world’s 50 largest publishers of all categories are U.S.-owned.
– The book publishing industry in Europe has approximately twice as many employees as in the United States.
– Of the top ten best-selling fiction authors in any language whose work is still in copyright, five are foreign. A British author wrote three of the top five best-selling books in the U.S. in 2012.
– Two of the three major record labels are foreign-owned. These two labels have a market share of 59 percent.
– Thirteen of the twenty best-selling recording artists are foreign.
– Of the 50 most popular motion pictures in the United States in 2012, 50 percent were filmed partly or entirely outside of the United States.

If American growth in cultural exports was the reason for expansion of American copyright, a decline in dominance would suggest that it is in American interests to relax their copyright protection and work towards reclaiming their creative zeal. Curiously, a day before Band and Gerafi released their findings, Maria Pallante (Registrar of Copyrights) spoke openly about returning American copyright term to life-plus-fifty-years. Mike Masnick writing for TechDirt covered Pallente’s initial remarks as well as her later formal testimony to United States’ SubCommittee on Courts, Intellectual Property and the Internet. Masnick goes into detailed discussion of her proposals: in agreement that there is need for change but with concern over the approach advocated by Pallente.

Looking back at Lee’s article, he gives a cogent history of the events surrounding CTEA and since. He draws attention to some of those people who sounded the alarm early, those people who spoke up before others were truly aware how deleterious to public interests the give-away of portions of the public domain was. One such advocate was law professor Dennis Karjala, a commentary he wrote in 1996 (rejected by major newspapers) still bears reading today:

The proposed copyright term extensions are a travesty that, if adopted into law, will become a tragedy. They are not based on the public interest but rather on private greed. Only the technical complexity of the issue and the diffuse nature of the public harm allows such proposals to move through the Congress essentially without public debate. They can be stopped, but not by a silent majority, or even a silent supermajority. Opponents of the extensions must be heard by Congress, with voices as loud as those seeking to prolong their parade of royalty welfare checks.

Lee also points out that only five years remain before Mickey Mouse stands again at the threshold of the American public domain, and muses as to whether Disney et al. will try for term extension. Such an egregious move is not out of the realm of possibility, given the financial benefits that will accrue to corporations. But as Lee writes: “One advantage opponents will have this time around is better arguments and evidence.” Indeed, copyright as a subject has a much wider audience than it did in the late 20th century, with the public more aware of its role as a stakeholder in negotiations. When the copyright amendment process begins in the United States, it can no longer be business-as-usual for content industries.

Related – 29 October 2013 Noah Berlatsky writing for the Atlantic, “Why Are Reading Textbooks So Out Of Date? Blame America’s Copyright Laws.”

Over the past two weeks Professor Joshua Gans (the Skoll Chair in Innovation and Entrepreneurship at the Rotman School of Management, University of Toronto) has drawn attention to the licensing practices of Harvard Business School Publishing (HBSP). Their flagship publication, Harvard Business Review (HBR), carries restrictions, not merely by institutional subscription-access but also by usage. On 6 October 2013, in a blog post for Digitopoly, Gans wrote that added charges are incurred (on a per student basis) when HBR is used for teaching purposes. As to what teaching purposes mean, Gans amplifies:

… a teaching purpose arises when we require a student to read an article, we suggest a student reads an article or we describe a means by which students may come by an article.

Gans further noted that HBSP has offered a bundled “all you can eat” contract which “covers all HBSP materials including cases, HBR articles and perhaps ‘other stuff”, thereby eliminating the need for either HBSP to scrutinize reading lists or for faculty members to concern themselves with evaluating costs. Gans questioned the artificial division between research, teaching and learning, and offered a bold idea – that the Financial Times should exclude HBR from designation as a research publication when preparing the annual rankings of business schools:

If HBR is considered a teaching material and not an academic or practitioner journal freely available for use by students — directed or otherwise — in the ordinary course of teaching, how could it be that HBS should get credit for providing that material as part of a research mission?

The Financial Times invited Gans to elaborate further on this topic; in the issue dated to 16 October 2013. Gans again voiced his concern:

[Even though] institutions’ libraries had a subscription to HBR that allowed students and teaching faculty to access them, these articles were “not intended for use as assigned course material in academic institutions”. This does not only apply to articles copied into course packs as required readings. It applies to everything else, including links from class web pages or even mere suggestions given to students to deepen their understanding of certain areas. HBSP would now only permit institutions to do any of those common activities if they paid a fee for each article and for each student enrolled in the course (whether the student accessed the article or not).

Accompanying the Financial Times article, in a Digitopoly blog entry posted on the same day, Gans emphasized that what troubled him the most is the notion of taxing “deep linking” which he defines as: “the direction of students via links on a web page, suggested readings in a course syllabus or the mention of HBR articles in class.” Gans also pointed out what most rational people would consider reasonable: “[schools] could avoid the cost of course packs by directing students to library holdings for which HBSP have already been paid institutional subscription fees.”

Regrettably, HBSP has little disincentive in this matter as long as educational institutions are willing to cooperate with such licensing terms. But Gans brings focus upon the elasticity of scholarly endeavor — the elements that are noncontractual but maintain the broader goal of scholarship — perhaps his concerns will be echoed by other faculty and the administration? In the meantime, it is important that students, teachers, researchers and administrators understand that the terms asked for by HBSP exceed the rights they hold under copyright law:

When a teacher asks a student to read an article and relies upon source material legitimately purchased by the institution, this has a strong claim to fair dealing. Last year the Supreme Court expressly dealt with this issue in the context of K-12 teachers making reproductions of supplemental, required readings (see discussion of Access v. Education (2012), here). Moreover, the Court also took pains to remind us that libraries are indeed places where students are allowed to borrow required readings (see here).

The act of recommending a reading is not an enumerated right under Section 3. 1 (scope of rights) of the Copyright Act.

Since its conception as law (approximately three hundred years ago), copyright has been rooted in the act of copying. Posting a link to material is not an act of reproduction (and thus is not infringement). The Supreme Court made this point forcefully two years ago in a case concerning defamation (see discussion of Crookes v. Newton (2011) here).

Following Gans’ article, the Financial Times published a response from HBSP on 17 October 2013; Das Narayandas (Senior Associate Dean and Chair for Harvard Business Publishing) offered this:

In the classroom, the use of HBR articles [and others] is decades-old, as are the norms around charging for such content when it is used for teaching rather than research purposes.

We discovered, though, that some institutions were using Ebsco access as a substitute for paying the normal course material fees. This summer, therefore, we designated 500 of the more than 13,000 HBR articles available in Ebsco – those most widely used in other schools’ curricula – as read-only and removed persistent linking to them. At the same time, we contacted schools and libraries to discuss institutional volume discounts. Any associated licence fees are not incremental or new; they simply shift the payment for these articles from the school to the library.

These articles remain available for researchers and research use – we simply limited the means by which they can be assigned and distributed as course materials. And, contrary to Prof Gans’ assertion, students can continue to gain access via libraries and other research portals to HBR articles faculty members would like to recommend.

It is a relief that access is still available to students. Nevertheless, Narayandas’ remarks need unpacking. That such materials are used in a classroom is “decades old” is true. However, his language of “the norms around charging for such content” insinuates that we have a tradition of a pay-per-view model of reading with respect to educational materials. This is not true. In the days before digital, when the bricks-and-mortar library was all we had, it was not the custom to charge additional fees as students arrived at the library to read journals recommended by their professors. Legitimately acquired material in a library is free to be read by all library patrons. With consideration of electronic distribution, last summer the Supreme Court stepped in to make it abundantly clear that technological advancement is not a reason to wrest further payment for works already paid for (see discussion of Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada (2012), here.)

Moreover, business models that draw artificial distinctions within the uses a patron may make of library materials are attempting to exclude fair dealing (or fair use in the United States). Our Supreme Court Justices have repeatedly held that fair dealing, a provision granted by law for unauthorized reproduction of copyrighted materials for the purposes of research, private study, etc.*, is always available for consideration. Fair dealing does not occur by name only; it is a matter of context and the copying must meet a comprehensive test of fairness. But, again, when the institution has already paid for access to the materials on an institution-wide license, fairness tilts towards the institution in matters of research, teaching, and learning.

*The latest amendment to the Copyright Act added “education” to that list. But it is important to remember that the sustaining decisions of fair dealing — as it supports research, teaching and learning — were established even without recourse to “education.” In particular, in Access v. Education (2012), Madame Abella pointed out that private study does not mean to study in isolation, but rather a personal endeavor.

Mike Masnick, writing for Techdirt this week, brought the plight of Lauren LoPrete to wider attention. LoPrete is the creator behind the delightful Tumblr site This Charming Charlie, and, the recipient of take-down actions which claimed that her work violated American copyright law.

LoPrete combines snippets of lyrics from The Smiths with Peanuts comic strips, drawn by Charles Schulz (1922-2000), to delightful results. However, Universal Music Publishing Group (the licensing arm of The Smiths), issued multiple take-down notices to Tumblr, arguing that LoPrete had engaged in copyright infringement.

Under American law, in order to avoid liability, Internet Service Providers must remove allegedly infringing material without dwelling on details such as due process. According to Tumblr’s Terms of Service (dated to 2012-03-22), after the removal, a subscriber may file a counter-notification (which must include his or her name, address, telephone number and email address) to the Internet Service Provider, which is then forwarded on to the complainant. If the complainant does not take further action within ten days, the material “may be restored.”

LoPrete initially chose to discontinue her work. But, after she posted a farewell message, lawyers rallied to the cause and offered pro-bono services to help reinstate her work. The firm of Booth Sweet LLP responded accordingly to Tumblr:

So much to answer for! Yet our client believes in good faith that these three posts, like all posts on her charming website, do not infringe the copyright for any Smith’s lyrics as they constitute fair use in accordance with 17 U.S.C. § 107. …

Their explanation covers the salient details (the use is transformative*, very little of the lyrics are used in each strip, and the new works in no way compete with the market of the songs) with admirable clarity and brevity. As to whether the works are reinstated, Universal has five more days to ponder their actions. Covering this story for MotherBoard, Fruzsina Eördögh writes: “When it comes to DMCA take-downs on the Internet, no one is more Lucy van Pelt-like than Universal.” And so we wait for September 30.

LoPrete 2013

Amusing as this story is, particularly in its David v. Goliath dimension, and admirable in its ingenuity and creativity, it also serves to illustrate a vital difference between American and Canadian copyright law.

Canadian Internet Service Providers (ISPs) are shielded from aggressive (and possibly baseless) copyright claims by virtue of the Canadian system of notice-and-notice. ISPs must convey complaints to subscribers, and maintain suitable records should the issue lead to litigation; that is all. ISPs are not required to remove material, disconnect subscribers, betray subscriber privacy, or take on the risk of liability.

However, if the TransPacific Partnership Agreement (TPP) should come to Canada, that sensible, made-in-Canada approach becomes a thing of the past. Canada would be obligated to adopt the notice-and-takedown approach of the United States. In an appearance to the House of Commons Standing Committee on Trade in June 2013, Michael Geist emphasized the backwardness of the TPP in connection to Canadian copyright law; specific to ISP liability he said:

This approach establishes the obligations for Internet providers and intermediaries when there are claims of copyright infringements, and grants copyright holders powers to raise allegations of infringement with the sites and their subscribers. Moreover, it protects the privacy of subscribers and does not result in takedowns of content based on mere allegations. During the debates on Bill C-11, Canadian Heritage Minister James Moore repeatedly pointed to notice and notice as an example of a positive Canadian-specific approach. Yet according to leaked documents, the TPP would require that Canada drop its approach in favour of a more draconian takedown system that could stifle free speech and result in the removal of content without the need for any proof of infringement.

Two years earlier, when Parliament explored amendments to Canadian copyright law (through then-named Bill C-32, which later became Bill C-11, which passed in June 2012 and entered into law in November 2012) Geist wrote about the effectiveness of notice and notice, as documented by the ISPs themselves. For instance:

… Rogers came prepared with evidence about how the system functions and on its effectiveness. It reports that it processed 207,000 notices in 2010, sending those notices to about five percent of its customer base. In other words, 95% of its subscribers are not identified by rights holders as copyright infringers – far from the piracy haven that it often claimed. Of the households that receive notices, only 1/3 receive a second notice. Of those that receive a second notice, only 1/3 of those receive a third notice. …

Returning to the immediate comparison, Canada does fall short of United States copyright law in one respect; the continued structure of fair dealing as a set of specified categories. Americans enjoy fair use’s language of “for purposes such as …” which gives shelter to uses that do not fit a set purpose. A scenario not uncommon in art, as I have identified in a post prior to the last amendments; see sometime art is just art. Fortunately, Canadians now have an expanded set of categories for fair use: research, private study, criticism, review, news reporting, education, parody and satire. And with continued reminders from our Supreme Court that fair dealing should be interpreted liberally, one can hope that artistic endeavor will more comfortably fall within fair dealing.

* Note: neither American nor Canadian law requires that a use be transformative before it can be considered fair use or fair dealing. The factor of transformation lends itself to discussion of new works, but is irrelevant in questions of unauthorized copying where the purpose is to disseminate the original work. In those situations, other aspects of the fairness analysis are germane.

Update — September 28, 2013 Good news. The Los Angeles Times editorial board writes that Universal is dropping the claim of infringement.

Last week Howard Knopf alerted us to the latest movement by Access Copyright to impose blanket copyright fees across universities and colleges in Canada, regardless of ongoing work by educational institutions to ensure that legitimate copyright fees are paid and that legitimate fair dealing is not denied. In his post of 17 September 2012 Knopf provides Access Copyright’s statement of case to the Copyright Board of Canada, and draws attention to a number of details including the collective’s position that:

… the fair dealing policy… promoted by the Association of Universities and Colleges of Canada and the Association of Canadian Community Colleges and adopted by many Educational Institutions, which purports to characterize as fair dealing amounts of copying essentially identical to that licensed by Access Copyright, is unfair and results in copying that is not fair

The statement of case explains in detail what Access Copyright will do (arguments to be presented, witnesses to be called, evidence to be produced, etc.) when the Copyright Board hears this case on 11 February 2014. The Board will then either signal a shift in thinking on their part, or offer Canadian education yet another opportunity for further strengthening of fair dealing by the Supreme Court of Canada. Unpacking that sentence will take several paragraphs; I ask for patience from readers.

The starting point is the work of law professor Graham Reynolds (previously at Dalhousie University, now at the University of British Columbia). In his chapter “Of Reasonableness, Fairness, and the Public Interest, Judicial Review of the Copyright Board’s Decisions in Canada’s Copyright Pentalogy,” Reynolds illustrates that, when certifying the Access Copyright tariff for educational institutions with respect to photocopies of excerpts in K-12 schools spanning 2005-2009, the Copyright Board applied a very narrow interpretation of the principles enunciated by the Supreme Court of Canada in CCH Canadian v. Law Society of Upper Canada. The Copyright Board’s decision was appealed and finally settled by the Supreme Court (favorable towards fair dealing) in one of the famed pentalogy decisions, Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright). The difference of opinion between the Board and the Court leads, as Reynolds suggests, to the conclusion:

[T]hat fairness (in the context of fair dealing) is not as discretionary a concept as it appears to be. [Alberta(Education) … clarifies] that the purpose of the Copyright Act requires a broad, liberal approach to fairness. By implication then, fairness is not broad and open-ended; rather it is infused with certain expectations with respect to the way in which it is to be applied (namely, in a large and liberal manner).

Reynolds makes plain that the purpose of the Copyright Act is evolving, moving away from an author-centric approach to an instrumental-public interest approach. Reynolds is equally specific that such a move is not an abandonment of owners’ rights; instead, the shift only ensures that limitations upon those rights are upheld as necessary to invigorate and maintain the public domain. In their examination of the K-12 situation of excerpts, the Copyright Board aspired to the earlier approach, even though the Supreme Court had consigned that approach to history.

The evolution of purpose of copyright in Canada illustrates a well-functioning system of laws and courts. Those authorities have made it abundantly clear that legal precepts are not immutable; they evolve in concert with developments in society. Evolution may take time, but is infinitely preferable to revolution.

The delay on the part of the Copyright Board can be explained with recourse to its very function; the Board’s mandate begins with:

The Board is an economic regulatory body empowered to establish, either mandatorily or at the request of an interested party, the royalties to be paid for the use of copyrighted works …”

This is not to imply that the Board is solely concerned with setting market prices. Yet it is hardly an accessible venue for discussion of exceptions; the lengthy and expensive process tends to discourage representations of public interest. As Knopf pointed out, even the Association of Universities and Colleges of Canada, in their wisdom, “abruptly withdrew its objections and withdrew from the Copyright Board hearing of April 2012, leaving its member universities unrepresented after having spent about $1.7 million.”

The Board’s past discomfort with endorsing a large and liberal interpretation of fair dealing (in both purpose and fairness) was quite evident; when reviewing the K-12 situation of excerpts, the Board wrote: “CCH now is the unavoidable starting point (para 75).” The connotation of “unavoidable” does not suggest the Board relished the task at hand. However, as Reynolds writes:

The end result is that post-Alberta (Education), the Copyright Board is significantly constrained in its ability to shape Canadian copyright law. Abella J’s reasons for judgment clarify that the Copyright Board does not have unlimited discretion under fairness (and fair dealing more broadly) to implement policy goals or promote values that are inconsistent with the purpose of the Copyright Act, as interpreted by the Supreme Court of Canada.

The difficulty for Canadian educational institutions, and Canadians in general, is that Access Copyright seems happy to play the game of “heads-I-win, tails-we-play-again”. In repeated and continued efforts to roll back the decade-plus evolution of copyright’s purpose — through lobbying, litigation and tariff applications — they display a lack of logic, as well as a questionable use of their members’ resources.

According to Access Copyright’s website, the following portions of the funds collected are withheld before distribution:

An administrative holdback of 20% to cover Access Copyright’s administrative and operational costs.

An allocation of 5% of copyright licensing royalties has been made toward costs for current and future tariff proceedings before the Copyright Board of Canada. These tariff proceedings help us ensure fair compensation for creators and publishers when their works are copied.

An allocation of 1.5% of copyright licensing royalties collected has been made for a cultural fund approved by Access Copyright’s board of directors.

The administrative holdback (20%) is high enough, leading to the question of why a further 5% must be withheld for future days in court. But that is not all; the information for title specific distribution indicates that an additional 25% of royalties collected through the fee increase covering 2005-2009 has been reserved to “support current and future tariff proceedings held before the Copyright Board of Canada.”

Access Copyright is gambling (with its members’ money) that the Board’s decision will be favourable to copyright holders. But, if the Supreme Court of Canada should be called upon to revisit the issue, Access Copyright would do well to remember that each adjudication of fair dealing at the Court within the last ten years has only raised the profile of fair dealing and strengthened its application.

In continuation to my last post, it is important to address concerns that AUCC’s proffered guidelines would lead to the limiting of fair dealing. Such limiting presents itself through two questions: (i) Would unauthorized copying inevitably be severely constrained and only occur as fits AUCC’s stipulated amounts? (ii) Does the very presence of such pedantic guidelines suggest that courts will limit their interpretation of fair dealing to match the approach taken within the postsecondary community? At stake is the currently robust, flexible provision that evolved through a decade of measured activity elicited from both the Supreme Court of Canada and the Government of Canada.

There are good reasons for establishing general guidelines of copying at postsecondary institutions – not the least of which is that these educational institutions have the opportunity to educate their communities about a realm of law that is pivotal to daily life. However, setting down guidelines, without history, without explanation, and without showing the importance of context to decisions of future copying, will not lead to broader understanding of fair dealing. Nor will it safeguard the measure as we know it today.

In my last writing, I gave the Supreme Court background to this discussion—the history that allows postsecondary communities to engage with confidence in some unauthorized copying for teaching and research. Readers are likely familiar with the six factors laid out by the Court in CCH Canadian as illustrative of the way an inquiry into fair dealing should occur. (The Court also stipulated that not all factors may apply all the time, and that other factors might be relevant to individual situations.) In evaluating the third factor, the character of the dealing, the element of practice came up:

In assessing the character of a dealing, courts must examine how the works were dealt with. …. It may be relevant to consider the custom or practice in a particular trade or industry to determine whether or not the character of the dealing is fair (para. 55).

Practice should be the precursor to guidelines. Esoteric rules are not easy to understand or accept; a recognizable activity adds credence to the process. Certainly, not all practices may be desirable. But discussion of existing practises is a necessary conversation if legitimate practices are not to be stunted. Out of the gamut of all practices will come the institutional option to facilitate the best of them.

Canada would do well to study the work of the Center for Social Media at American University; Patricia Aufderheide, Peter Jaszi and their colleagues lead the field in development of fair use best practices for a range of communities.* One of the more recent projects involves fair use for Academic and Research Librarians. (Via the link is an info-graphic which includes a concise comparison between guidelines and best practices; it would not be out-of-place to the current Canadian situation.) The collections of practices address dance, film studies, journalism, media literacy, open-courseware, poetry, … It is an impressive array of work and all recommendations begin by examining the field in question through its own participants.

For instance, the development of best practices in the field of communication was led by twenty scholars of the International Communication Association with participation from 387 members. It became evident that: “… copyright ignorance and misunderstanding hamper distribution of finished work, derail work in progress, and most seriously, lead communication researchers simply to avoid certain kinds of research altogether” (emphasis added). With the grassroots input, four situations were identified as needing guidance and a fair use practice for each was devised. All practices were reviewed by a legal team before publication of Best Practices for Scholarly Research in Communication (2010).

For example, one situation is described as:

Quoting Copyrighted Material For Illustration: Communication scholars often reproduce copyrighted material in their term papers, conference papers, academic presentations, journal articles, books, theses, and audiovisual media productions as illustrations or examples of an economic, social, or cultural phenomenon with which their scholarship is concerned. Depending on the illustrative context, these reproductions may be partial or complete.

How the principle of fair use supports such work is then explained:

Scholars may invoke fair use to reproduce copyrighted material where it serves to explain or illustrate their scholarly insights or conclusions about communications in relation to social, cultural, political, or economic phenomena. Generally speaking, such uses transform the material reproduced by putting it in an entirely new context; thus, a music video clip used to illustrate trends in editing technique or attitudes about race and gender is being employed for a purpose entirely distinct from that of the original, and is typically directed to an entirely distinct audience from that for which it originally was intended. This is true even in situations where the media object in question is not subjected to specific analysis, criticism, or commentary.

The resolution to the question of copying is to be determined by each scholar; the best practices explain what factors will limit the copying:

–A scholar should determine the nature of the excerpt (or the use of a work in its entirety) based on the scholar’s academic objective in choosing the illustration; merely decorative or entertaining uses of copyrighted material, under the guise of illustration, are inappropriate. However, should a work chosen for its significance to a scholarly argument also be entertaining, that fact should not disqualify the use from being considered fair.

–A scholar should determine the extent of use (both as to the number of illustrations employed and the amount excerpted from each) based on the scholar’s illustrative objective. Scholars should provide citations in a form and manner typically used in communication scholarship for the material used in any publication of shared results of the study.

[As an aside; throughout all of the Center’s best practices documents is a constant reminder that best practices form neither the floor nor the ceiling on legitimate activity.]

Canada does not have an institutional body on the scale of the Center for Social Media; more’s the pity. However, that need not preclude each institution from shaping its own best practices. At the end of the day, institutions might use some of the suggestions provided by AUCC. But it would serve fair dealing, and Canadians, far better if the guideline is genuinely supportiveof teaching, research and learning practices instead of giving the appearance of shaping teaching, research, and learning practices along the lines of very conservative, oh-so-safe, behavior. Because, in this situation, safety is an illusion. As Knopf pointed out, there is no assurance that unnecessary concessions on the part of Canadian educational institutions will lead to an absence of mischievous litigation.

A better pre-emptive defense is an informed community. And that returns us to CCH Canadian. At that time (2004) the Court stated:

[Is] it incumbent on the Law Society to adduce evidence that every patron uses the material provided for in a fair dealing manner or can the Law Society rely on its general practice to establish fair dealing? I conclude that the latter suffices. Section 29 of the Copyright Act states that “[f]air dealing for the purpose of research or private study does not infringe copyright.” The language is general. “Dealing” connotes not individual acts, but a practice or system. This comports with the purpose of the fair dealing exception, which is to ensure that users are not unduly restricted in their ability to use and disseminate copyrighted works (para.63).

Thus, if each institution upholds fair dealing as a practice which ensures that users are not unnecessarily restricted in their uses, this may usher in safety of a different nature – the confidence that future Courts will not be constrained to reduce the scope of fair dealing on the grounds that institutions were indifferent to fair dealing’s situational, contextual, or flexible nature.

* Reclaiming Fair Use by Aufderheide and Jaszi (University of Chicago Press, 2011) is well worth reading.